The external appearance of a product (design)
A registered design protects the shape, configuration, pattern or ornamentation of a product - that is, what gives a product a unique appearance.
Why register a design?
Where you have a product that has an appealing shape or appearance, and that shape or appearance contributes to a consumer's preference or desire for that product, you should consider protecting the shape or appearance by registering a design.
Having a registered design ensures that a competitor cannot have a product with the same shape or appearance.
If a competitor was able to do that, they would be 'free riding' on your innovation (i.e. by developing a product with the same shape or appearance), and would be infringing your registered design. For example, anyone can produce another electric kettle without infringing your registered design, but if they produce an electric kettle with the same shape or appearance as your kettle, your registered design would be infringed.
Some examples of products that are protected by registered designs are shown in the table below. In each of these examples, it is not the product that is protected, but its shape or appearance.
| 3 dimensional products | What the registered design protects |
|---|---|
| Mobile phone | Its shape and its appearance |
| Chair | The unique shape of a chair, or of its components (e.g. legs) |
| Bottle | The shape of the bottle |
| Car headlights | The shape of the car headlights |
| Electric kettle | The shape and appearance of the kettle |
| Toy | The shape and appearance of the toy |
| 2 dimensional products | What the registered design protects |
| Wallpaper | The pattern on the wallpaper |
| Fabric | The fabric pattern |
If you wanted to protect a fully automatic hoist for bedridden patients in hospital, so that anyone making a fully automatic hoist, with any design, would infringe, then you would need patent protection (which would apply if your hoist meets the requirements for a patent, including newness or novelty).
The following table explains the requirements for registering a design.
| Requirement | Description |
|---|---|
| The design must be new. | It must not be the same as another design anywhere in the world. |
| The design must be distinctive. | It must not be substantially similar to another design. |
| The design must not have been publicly disclosed. | If you have sold the product with the design or pattern, or shared a copy of the design, it may be disqualified from meeting the requirements of being new and distinctive. |
| The design must be applied to a product. | The design must be used on a product. A conceptual design cannot be registered. Similarly, something that is artistic (e.g. drawings or paintings) cannot be registered as a design. These works should be protected by copyright instead. |
| The product must be portable. | Portability means that a design for something fixed (e.g. a building) will not be eligible for registration. |
To register a design you must lodge your application with IP Australia.
Making the application
You can lodge the application on IP Australia's website. You can also engage an attorney to file the application for you.
Processing of the application
The application to register a design is checked by IP Australia for compliance with certain formalities. If there is compliance, registration usually takes place 3 months later.
Examination and certification
A design is not examined by IP Australia, unless you request examination. Normally, you would only request an examination if you sought to stop an infringer.
Examination occurs when examiners consider whether there is compliance with all the requirements for the design to be registered, including whether the design is new and distinctive.
After a successful examination, the design is certified, and you become entitled to stop infringers.
No 'worldwide' registered design
There is no such thing as a 'worldwide' design. A design is registered by a government of a country.
The Australian Government, for example, does not have power to register a design that would apply in the United States. Nor does the United States Government have the power to register a design that would apply in Australia.
Applying for a registered design in other countries
There are 2 ways to apply for a registered design in other countries:
- You can file a separate and independent application in each country where you decide to pursue the registration of the design.
- You can file an application in countries that you select, within 6 months of the date of your Australian application, and nominate the date of your Australian application as the priority date for all the foreign applications.
The advantages of filing foreign applications within 6 months of your Australian application, and nominating the date of your Australian application as the priority date for all the foreign applications, include:
- The judgment of the newness of your design is made as at the priority date, that is the date of the Australian application.
- Any public use or disclosure after the date of your Australian application will therefore be disregarded in determining the eligibility of your foreign applications.
The period of 6 months to make the foreign applications is strictly applied.
If you apply for the registration of a design after that 6 month period, the newness of the design will be assessed as at the date of the foreign application, so any prior public use might operate to disqualify you from succeeding with the foreign application.
When to register a design outside Australia
In practice, you would consider applying for a registered design in those countries where you anticipated:
- selling the products protected by the design
- exporting the products protected by the design
- licensing the products protected by the design.
- A registered design lasts 5 years.
- You can renew your registration for another 5 years before the expiration date.
- As it can only be renewed once, the maximum duration of a registered design is 10 years.
As the owner of a registered design, your rights are:
- to obtain a court order to stop a competitor unlawfully using (infringing) your registered design (this kind of order is called an injunction)
- to grant a licence to another person (e.g. in other parts of Australia, in other industries, or in other countries) to commercially exploit your registered design, in return for licence fees, royalties, or other payments
- to sell your registered design
- to give your registered design in your will
- to mark your product, and its packaging, as being the subject of a registered design (someone who does so without having a registered design commits an offence).